No.
1:05cv341
United States District Court, E.D. Virginia
Renaissance Greeting Cards v. Dollar Tree Stores
405 F. Supp. 2d 680 (E.D. Va. 2005)
Decided Dec 19, 2005
No. 1:05cv341.
681 December 19, 2005. *681
Michael Steven Culver, Millen White Zelano
Branigan PC, Arlington, VA, for Plaintiff.
Beth Hirsch Berman, Williams Mullen Hofheimer
Nusbaum, Norfolk, VA, for Defendant.
682 *682
683 *683
MEMORANDUM OPINION
ELLIS, District Judge.
In this suit, an owner of three registered
trademarks sues a large discount retailer for
trademark infringement and unfair competition
under both the Federal Trademark Act of July 5,
1946, 15 U.S.C. § 1051, et seq., as amended, and
Virginia common law. More particularly, plaintiff
Renaissance Greeting Cards, Inc. ("RGC"), a
marketer of greeting cards and the owner of three
registered trademarks employing the words
RENAISSANCE and RENAISSANCE
GREETING CARDS for its line of greeting cards,
brings this federal trademark infringement and
state unfair competition action against the
684 defendant, Dollar Tree Stores, Inc. ("Dollar
Tree"), for using the word RENAISSANCE in
3 marketing its own line of gift bags, and to a lesser
degree for use in the marketing of gift wraps,
bows, boxes, tissue paper and ribbon. At issue is
whether RGC's RENAISSANCE trademark is so
well-recognized by consumers of greeting cards
(that is, strong) that Dollar Tree's use for non-
competitive products is likely to cause confusion
2 among consumers. *2
I. 1
1 The facts recited here are largely
undisputed. Where disputes exist, they are
noted and, if material, the facts are
construed favorably to the non-moving
party, as required. See Matsushita Elec.
Indus. Corp. v. Zenith Radio Corp., 475
U.S. 574, 587 (1986).
Plaintiff RGC is a Maine Corporation engaged in
the business of creating and marketing specialty
greeting cards. RGC is a wholly owned subsidiary
of Florists' Transworld Delivery, Inc. ("FTD"). In
August 1992, RGC registered with the Patent and
Trademark Office ("PTO") a trademark employing
the word RENAISSANCE in stylized form,2 and a
trademark using the phrase RENAISSANCE
GREETING CARDS in a similarly stylized form.3
In 1996, RGC restyled the lettering of the 1992
trademarks slightly and continues using this
restyled lettering today.4 In October 2003, RGC
registered a third trademark for the word
RENAISSANCE in typed form.5 RGC and its
predecessors have used these marks for greeting
cards continuously since 1977. The parties agree
that RGC's RENAISSANCE *684 mark is
incontestable as applied to greeting cards pursuant
to 15 U.S.C. §§ 1065 and 1115(b).6 *3
1
 Renaissance Greeting Cards v. Dollar Tree Stores
The word RENAISSANCE is a very commonly-
used mark for a wide variety of goods and
services, both within industries arguably related to
greeting cards and in the economy in general. For
example, RGC's marks are registered in PTO
International Class 16, which covers paper and
printed goods.7 In this class, there are currently,
apart from RGC's marks, 20 active registrations or
applications for marks using the word
RENAISSANCE. These registrations are for a
variety of paper products including: labels,
wedding albums, periodicals and various paper
goods. Among all classes of products, there are
presently 465 active federal and 203 state
trademark registrations or pending applications for
marks containing the word RENAISSANCE.
These hundreds of marks represent a diverse array
of industries, including: the hotel industry, the
information technology industry, executive
education services, and costume jewelry. Indeed, it
appears that included among these many marks is
a mark used in connection with greeting cards. A
registered trademark of CLASSIC
GREETINGS.COM: HOME PORT OF THE
WWW RENAISSANCE,8 is registered for
"entertainment services, namely, providing
information on art, music, and poetry in the field
4 of *4 classical art and literature via the global
computer network," but visitors to the website
www.classicgreetings.com are also offered "free
685
classic greetings and poetry cards."9 In addition,
there are 245 identifiable "common law
trademarks" using the word RENAISSANCE and
at least 2,925 businesses using the word
RENAISSANCE in their business names. Thus,
the word RENAISSANCE is widely used by
companies selling a variety of products, some
related to, and many distinct from, greeting cards.
7 See 37 C.F.R. § 6.1. The regulation lists the
following as covered by Class 16 in the
international schedule of classes of goods
and services:
405 F. Supp. 2d 680 (E.D. Va. 2005)
Paper, cardboard and goods made
from these materials, not included
in other classes; printed matter;
bookbinding material;
photographs; stationery;
adhesives for stationery or
household purposes; artists'
materials; paint brushes;
typewriters and office requisites
(except furniture); instructional
and teaching material (except
apparatus); plastic materials for
packaging (not included in other
classes); playing cards; printers'
type; printing blocks.
8 This trademark, Registration number
2,415,517, was among those included in
Dollar Tree's summary judgment
submissions.
9 This web site information is appropriate for
judicial notice pursuant to Rule 201,
Fed.R.Evid. See, e.g., Wang v. Pataki, 396
F.Supp.2d 446, 2005 WL 276562, *10 n. 2
(S.D.N.Y. 2005) (taking judicial notice of
the contents of a website) (citing Hotel
Employees Rest. Employees Union, Local
100 v. New York Dep't of Parks Recreaion,
311 F.3d 534, 549 (2d Cir. 2002)).
In an effort to protect its trademark, RGC has
initiated one cancellation proceeding and three
opposition proceedings *685 at the PTO against
parties who had registered or were seeking to
register marks containing the word
RENAISSANCE. In August 2004, RGC formally
opposed registration of the mark RENAISSANCE
LABEL by Renaissance Mark, Inc. for its line of
Printed labels. The parties reached a settlement
restricting the types of labels Renaissance Mark,
Inc. may offer under the RENAISSANCE mark.
In October 2001, RGC opposed registration of the
mark RENAISSANCE by Album X Corporation
for its line of wedding and photo albums. This
dispute was settled by an agreement that Album X
Corporation would not market its albums in
department stores, while allowing Album X to
2
 Renaissance Greeting Cards v. Dollar Tree Stores 405 F. Supp. 2d 680 (E.D. Va. 2005)

continue to market its albums elsewhere under the advertising efforts, therefore, are directed at its
RENAISSANCE mark. In September 1992, RGC wholesale customers. Over the past five years,
opposed Renaissance of Thought, Inc.'s RGC has expended an average of $358,000
registration of the mark RENAISSANCE OF annually on advertising. In the three years prior to
THOUGHT, INC. The merits of the opposition 1993, RGC expended an average of approximately
were not adjudicated, as the other party voluntarily $230,000 annually on advertising. RGC has not
abandoned the application. Finally, in April 1993, provided any survey evidence on the brand
RGC petitioned for the cancellation of the 6 recognition of its RENAISSANCE trademark. *6
registered mark of RENAISSANCE held by Argo
Greeting cards are sometimes marketed under the
5 *5 Wiggins S.A. RGC withdrew its petition in
same trademark as gift bags or gift wrap, or both.
1994 and the registration was cancelled shortly
Several of RGC's competitors have marketed these
thereafter under Section 8 of the Lanham Act,
items under the same trademark including:
which requires the PTO to cancel a registration
Paramount Cards, Marian Heath, Marcel
after six years if the mark is no longer in use. 15
Schurman, Recycled Paper Greetings, Hallmark
U.S.C. § 1058(a). In addition, counsel for RGC
and the Carlton division of American Greetings.
corresponded with three other parties using or
Indeed, RGC marketed its own line of gift bags,
intending to use the RENAISSANCE mark in a
gift wrap, bows and ribbon under the
conflicting manner, which resulted in the cessation
"Renaissance" trademark during the 1980s, but it
of the conflicting use.
ceased doing so in 1990 and has not done so since.
RGC's sales constitute a very small portion of the 686 *686
overall domestic greeting cards market. Over the
Defendant Dollar Tree is a large national retailer
past five years RGC has had average annual sales
operating approximately 2,845 stores in all 48
of $12 million. By comparison, the retail greeting
contiguous states of the continental United States.
cards market is valued at roughly $7 billion
For the year that ended January 29, 2005, Dollar
annually. In the three year period prior to 1993,
Tree's net sales totaled $3.126 billion. Its net
RGC's sales averaged just $7.7 million annually.
income for the same period was $180.250
The vast majority of RGC's sales are made not
million.10 Dollar Tree has used the
directly to consumers, but through its sales
RENAISSANCE mark on its line of gift bags
representatives and sales force to various retailers
since 1993, and on its line of gift wrap, boxes,
and to florists affiliated with FTD. The
bows, ribbon and tissue since 2002. Examples of
distribution among these outlets, based on the
Dollar Tree's use of the mark RENAISSANCE on
percentages of RGC's sales, is as follows: 18% for
its products are attached hereto as Exhibit A.
pharmacies; 16% for florists; 15% for grocery
Dollar Tree developed its marks without
stores; 13% for card and gift shops; 12% for
knowledge of RGC's marks. Dollar Tree chose the
hospital gift shops; and 26% for other retail outlets
RENAISSANCE mark for its line of gift bags
including bookstores, convenience stores,
because it "symbolize[d] high quality and
department stores, hardware stores, hotel lobby
fanciness to enhance the perceived value of the
stores, mail box stores, newsstands, party goods
gift." Edney Declaration ¶ 5. Dollar Tree has
stores, office supply stores and the like.
provided different estimates as to how many gift
With the exception of local advertising in support bags it has sold. These estimates range from
of its retail outlet store in Maine, RGC does not approximately 250 million to approximately 500
advertise its products directly to retail consumers, million units of gift bags, gift wrap, bows, etc., on
but instead advertises exclusively in trade which the RENAISSANCE mark has appeared
publications and at trade shows. Most of RGC's since 1995. In addition to selling gift bags, Dollar

3
 Renaissance Greeting Cards v. Dollar Tree Stores
7 Tree markets greeting cards *7 under the
TENDER THOUGHTS trademark of its supplier,
American Greetings Corporation.
10 It is appropriate to take judicial notice of
SEC filings at the summary judgment
stage. Rule 201(c) Fed.R.Evid.; See, e.g.,
In re Delmarva Securities Litigation, 794
F.Supp. 1293, 1299 (D.Del. 1992) ("SEC
filings fall within th[e] category of public
records that can be judicially noticed.").
Dollar Tree did not conduct a trademark search or
obtain opinion of counsel prior to its initial use of
the RENAISSANCE mark in 1993, nor did it do
so before using the mark on its gift wrap products
in 2002. During the latter half of 2003, Dollar Tree
performed searches on various marks that it used,
and discovered that the mark RENAISSANCE
was used by many different companies. In light of
this discovery, it considered abandoning use of the
RENAISSANCE mark, and ultimately did so in
May 2004 when it began marketing its line of gift
bags, gift wrap, etc. under the mark VOILA.
Despite this abandonment, some gift bags bearing
Dollar Tree's RENAISSANCE mark made prior to
May 2004 remained in stock and available for
purchase as late as July 2005.
Despite the very large volume of bags bearing the
RENAISSANCE mark sold by Dollar Tree
beginning in the early 1990s, RGC did not
discover Dollar Tree's use of the mark on its line
of gift bags until 2003. As a result of this
discovery, RGC sent a letter to Betta Products,
Inc. ("BPI"), the apparent manufacturer of the gift
bags bearing the allegedly infringing mark. BPI
responded by directing RGC to Dollar Tree, at
whose direction they were using the
RENAISSANCE mark. Counsel for RGC wrote
Dollar Tree in December 2003 raising the
possibility that Dollar Tree's use of the
RENAISSANCE mark on its gift bags might
violate trademark and unfair competition laws,
and seeking to discuss the matter with Dollar
Tree's intellectual property counsel. This letter had
not yet been responded to as of February 27, 2004,
405 F. Supp. 2d 680 (E.D. Va. 2005)
when counsel for RGC sent Dollar Tree a second
letter seeking to discuss the matter with Dollar
Tree's intellectual property counsel. Employees of
Dollar Tree referred RGC to its intellectual
property counsel, who RGC contacted by letter on
8 June 25, 2004. No response to this letter was *8
ever received by RGC.
After the initiation of this lawsuit, RGC solicited
instances of actual confusion from its sales force.
As a result, RGC has identified three wholesale
customers who manage retail outlets that buy
greeting cards and who claim to have been
687 confused *687 by Dollar Tree's use of the word
RENAISSANCE on its gift bags. Thus, Lena
Depp, the owner of Lena's Card Gift Shoppe in
Frankfort, Kentucky and a customer of RGC for
approximately ten years, claims that "the
similarities in the name and lettering style" led her
to believe that a gift bag purchased at Dollar Tree
on which the words "Renaissance Gift Bags"
appeared was connected to RGC. As a result, she
asked the sales representative of RGC from whom
she purchased greeting cards to sell her the gift
bags for resale in her shop. Similarly, Tiffany Pope
Jones, the manager and buyer for Raley Pharmacy
in Catoosa, Oklahoma and a customer of RGC,
believed that a gift bag she received was sold by
RGC when, in fact, it was sold by Dollar Tree. A
similar instance of confusion was reported by a
store manager in Indiana. Finally, an independent
sales representative in Florida, who sells RGC
cards was confused after seeing a Dollar Tree gift
bag with the name RENAISSANCE on it. RGC
has not identified any instances of actual
confusion among the retail consumers of its gift
cards, nor have they conducted a survey of those
customers to determine whether they have been
confused by Dollar Tree's use of its
RENAISSANCE on its line of gift bags or
whether they would be likely to be confused.
RGC brought this suit on March 29, 2005, and the
second amended complaint includes three claims:
(i) infringement of a federally registered
trademark as prohibited by 29 U.S.C. § 1114(1);
4
 Renaissance Greeting Cards v. Dollar Tree Stores
(ii) trademark infringement and a false designation 10
of origin as prohibited by 29 U.S.C. § 1125(a); 688
and (iii) common law infringement and unfair
9 competition under Virginia state *9 law. The
parties, recognizing that the material facts in this
case are largely undisputed, have filed cross-
motions for summary judgment pursuant to Rule
56(c), Fed.R.Civ.P. These motions have been fully
briefed and argued, and are now ripe for
disposition.
II.
Summary judgment is appropriate where the
"pleadings, depositions, answers to interrogatories,
and admissions on file, together with the
affidavits, if any, show that there is no genuine
issue as to any material fact, and that the moving
party is entitled to judgment as a matter of law."
Rule 56(c), Fed.R.Civ.P. A genuine issue of
material fact exists where there is evidence,
viewed in the light most favorable to the non-
moving party, such that a reasonable jury could
find in favor of the non-moving party. Matsushita
Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S.
574, 585-87 (1986). The opposing party "may not
rest upon the mere allegations or denials of [its]
pleadings," but instead must "set forth specific
facts showing that there is a genuine issue for
trial." Fed.R.Civ.P. 56(e). When considering cross-
motions for summary judgment, each motion
should be evaluated separately using the standard
set forth above. See ITCO Corp. v. Michelin Tire
Corp., Commercial Div., 722 F.2d 42, 45 (4th Cir.
1983) ("The court is not permitted to resolve
genuine issues of material fact on a motion for
summary judgment — even where, as below, both
parties have filed cross motions for summary
judgment.").
III.
A trademark infringement case involves a two part
inquiry: (1) whether the plaintiff has a valid,
enforceable trademark, which will therefore be
deemed eligible for protection, and, if so, (2)
whether the defendant's use of an identical or
405 F. Supp. 2d 680 (E.D. Va. 2005)
similar mark is "likely to cause confusion" in *10
*688 the marketplace.11 These principles govern
RGC's two federal claims. And, because there is
essentially no dispute that RGC's marks are valid
and enforceable, the principal battleground for
both claims is the presence or absence of a
likelihood of confusion among consumers
stemming from Dollar Tree's use of its
RENAISSANCE mark on paper products other
than greeting cards.
11 See 15 U.S.C. §§ 1114(1), 1125(a); Lone
Star Steakhouse Saloon, Inc. v. Alpha of
Virginia, Inc., 43 F.3d 922, 933 (4th Cir.
1995) ("[T]he Lanham Act establishes a
two prong test that Plaintiffs must satisfy in
order to obtain an injunction for trademark
infringement and unfair competition. In
addition to proving the mark's
protectibility, a complainant must
demonstrate that the defendant's use of the
colorable imitation is likely to cause
confusion among customers."); Perini
Corp. v. Perini Constr., 915 F.2d 121, 124
(4th Cir. 1990) (same).
Because the test for a claim of common law
infringement and unfair competition under
Virginia law likewise focuses on the likelihood of
confusion among consumers, this claim need not
be analyzed separately.12 In any trademark
infringement case, state or federal, the goals of
trademark protection, which include protecting
product identification, providing consumer
information, and encouraging the production of
quality goods, must be balanced by the concern
that trademark protection not become a means of
monopolizing language or stifling productive
competition. See Lamparello v. Falwell, 420 F.3d
309, 313 (4th Cir. 2005); see also J. Thomas
McCarthy, McCarthy on Trademarks and Unfair
Competition § 2.2 (2005) (hereinafter McCarthy
on Trademarks).
12 See Lamparello v. Fallwell, 420 F.3d 309,
312 n. 1 (4th Cir. 2005); Lone Star
Steakhouse Saloon, 43 F.3d at 930 n. 10
5
 Renaissance Greeting Cards v. Dollar Tree Stores
(citing Food Fair Stores, Inc. v. Lakeland 689
Grocery Corp., 301 F.2d 156, 160 (4th Cir.
1962)); Teaching Co. Ltd. Partnership v.
Unapix Entertainment, Inc., 87 F.Supp.2d
567, 575 (E.D.Va. 2000).
The Validity of RGC's Marks
As a threshold matter, it is necessary to determine
11 whether RGC's RENAISSANCE *11 trademark is 12
valid, and therefore entitled to protection.13 A
mark will not be entitled to protection unless it has
acquired a sufficient level of distinctiveness, that
is, whether "is serves the traditional trademark
functions of `distinguishing the applicant's goods
from those of others' and identifying the source of
the goods." Retail Services, Inc. v. Freebies
Publishing, 364 F.3d 535, 538 (4th Cir. 2004)
(citing Two Pesos, Inc. v. Taco Cabana, Inc., 505
U.S. 763, 768 (1992)). A trademark can gain
distinctiveness based on either the word's inherent
quality, or the meaning that the word has gained
through exposure to the market. See Id. at 538-39.
Based on the mark's inherent qualities, courts
categorize marks into one of four classifications
along a spectrum of increasing distinctiveness: (1)
generic; (2) descriptive; (3) suggestive; and (4)
arbitrary or fanciful. See Lone Star, 43 F.3d at 933.
13 As noted, there is essentially no dispute
that RGC's mark is valid and enforceable in
the greeting card market. Even so, the
analysis here of the nature of RGC's mark
is essential to an assessment of the strength
of RGC's mark and hence relevant to the
analysis of the likelihood of confusion
question.
At the most distinctive end of the spectrum are
arbitrary or fanciful marks, such as KODAK or
XEROX, which are meaningless outside of the
product they brand and therefore entitled to the
strongest form of protection. See Sara Lee Corp. v.
Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir.
1996). At the least distinctive end of the spectrum
are generic marks, which simply "convey
information with respect to the nature and class of
405 F. Supp. 2d 680 (E.D. Va. 2005)
the article," and *689 are therefore, never entitled
to trademark protection. Washington Speakers
Bureau, Inc. v. Leading Authorities, Inc., 33
F.Supp.2d 488, 495 (E.D.Va. 1999). In between
these two poles are suggestive and descriptive
marks. Suggestive marks, such as COPPERTONE,
or PLAYBOY, are "meant to project a favorable or
idealistic image with which a prospective user
might *12 identify" but do not suggest a particular
product or service. Sara Lee, 81 F.3d at 464.
Descriptive marks, such as AFTER-TAN post
tanning lotion, or 5 MINUTE GLUE, "merely
describe a function, use, characteristic, size, or
intended purpose of the product," and are entitled
to protection only if they have developed
"secondary meaning" in the marketplace such that
consumers have come to associate the mark with
that particular product. Id. (citing COCA-COLA
as the paradigmatic example of a descriptive mark
that has acquired secondary meaning)
Because the term RENAISSANCE does not
describe any particular characteristic of RGC's
greeting cards, but "requires some imagination to
connect it with the goods," it is suggestive, and
therefore entitled to protection. Freebies, 364 F.3d
at 539. The mark's registration by the PTO without
evidence of its secondary meaning further
supports the conclusion that the mark is
suggestive. Pizzeria Uno Corp. v. Temple, 747
F.2d 1522, 1528-29 (4th Cir. 1984). Indeed, RGC's
marks have become incontestible and therefore,
their validity may not be challenged. 15 U.S.C. §
1115(a).
The conclusion that RGC's mark is incontestable,
is merely necessary, but not sufficient to a finding
of infringement. While the Supreme Court has
made clear in Park `N Fly, Inc. v. Dollar Park Fly,
Inc., 469 U.S. 189 (1985), that the validity of an
incontestably registered mark cannot be
challenged, Dollar Tree is free to argue that the
mark is not strong and therefore use in related but
different markets is not likely to cause confusion
among consumers. See Petro Stopping Centers
6
 Renaissance Greeting Cards v. Dollar Tree Stores
L.P. v. James River Petroleum, Inc., 130 F.3d 88,
92 (4th Cir. 1997). Thus, the Fourth Circuit has
stated:
[I]ncontestability affects the validity of the
trademark but does not establish the
likelihood of confusion necessary to
warrant protection from infringement.
Likelihood of consumer confusion remains
13 an independent requirement for *13 14
trademark infringement. . . . [We] hold that
we are free to address whether Plaintiffs'
incontestable trademark is descriptive or
suggestive in determining whether the
likelihood of consumer confusion exists in
this case.
Lone Star, 43 F.3d at 935; see also McCarthy on
Trademarks §§ 11:84, 32:155. To find
infringement, RGC still has the burden of
establishing by a preponderance of the evidence
that the use of RENAISSANCE by Dollar Tree is
likely to cause confusion.
Likelihood of Confusion
The Fourth Circuit has highlighted the following
seven factors to be considered when determining
whether the use of a similar trademark has resulted
in the likelihood of confusion:
(i) the strength or distinctiveness of the mark;
(ii) the similarity of the two marks;
(iii) the similarity of the goods/services the
marks identify;
(iv) the similarity of the facilities the two
parties use in their business;
(v) the similarity of the advertising used by
the two parties;
(vi) the defendant's intent; and
690 (vii) actual confusion. *690 Pizzeria Uno, 747 F.2d
at 1527. These factors constitute an approximate
guide, not a rigid formula, and the relevance or
405 F. Supp. 2d 680 (E.D. Va. 2005)
relative weight of any of these factors may vary
depending on the circumstances of a given case.
Id.; Sara Lee, 81 F.3d at 463.
Although the likelihood of confusion is a "factual
issue dependent on the circumstances of each
case," summary judgment is appropriate when the
undisputed material facts that underlay the inquiry
clearly demonstrate a likelihood of confusion.
Resorts of Pinehurst, Inc. v. Pinehurst *14 Nat.
Corp., 148 F.3d 417, 422 (4th Cir. 1998).
Summary judgment is especially appropriate
where, as here, the parties have agreed on a bench
trial and submitted a "voluminous record to the
court for dispositive decision at the time of the
summary judgment motions." International
Bancorp, LLC v. Societe des Bains Mer et du
Cercles des Estrangers a Monaco, 329 F.3d 359,
362 (4th Cir. 2003), cert. denied, 540 U.S. 1106
(2004); see August 19, 2005 Transcript, at 41 (The
Court: "All right. I don't need anything more.
After that, the case is ready for disposition, isn't it,
Mr. Hanes [Attorney for Dollar Tree], Mr. Culver
[Attorney for RGC]." Attorney for Dollar Tree:
"Yes." Attorney for RGC: "Yes."). The Fourth
Circuit recognizes, therefore, that
It makes little sense to forbid the judge
from drawing inferences from the evidence
submitted on summary judgment when
that same judge will act as the trier of fact,
unless those inferences involve issues of
witness credibility or disputed material
facts. If a trial on the merits will not
enhance the court's ability to draw
inferences and conclusions, then a district
judge properly should draw his inferences
without resort to the expense of trial.
International Bancorp, 329 F.3d at 362 (quoting
Matter of Placid Oil Co., 932 F.2d 394, 398 (5th
Cir. 1991)). Thus, if, based on the undisputed facts
in the summary judgment record, no reasonable
jury could find a likelihood of confusion,
summary judgment is appropriate.
(i) The Strength or Distinctiveness of the Mark
7
 Renaissance Greeting Cards v. Dollar Tree Stores
The Fourth Circuit has emphasized that the
strength or distinctiveness of the mark is the
"paramount factor" in determining likelihood of
confusion. Pizzeria Uno, 747 F.2d at 1527. See
also Lone Star, 43 F.3d at 933; Sara Lee, 81 F.3d
at 467 (describing the strength of the mark as the
"alpha of infringement analysis"). In evaluating
the strength of a mark, it is useful to consider two
separate categories of a mark's strength: (1)
conceptual strength: the placement of the mark
along a spectrum focusing on the inherent
15 potential distinctiveness of the term; and *15 (2)
commercial strength: the marketplace's
recognition as of the time the mark is asserted in
litigation.14 Of these two considerations, the
second is more important, because a conceptually
691 weak but commercially *691 strong mark can still
gain protection through secondary meaning, as
illustrated by such examples as AMERICAN
Airlines, PAYLESS Drug Stores and KENTUCKY
FRIED CHICKEN. See McCarthy on Trademarks
§ 11:83. On the other hand, a conceptually strong
mark that is relatively unknown in the marketplace 16
will not be likely to cause any confusion among
consumers of other products. Id. To afford
protection to marks simply on the basis of their
conceptual distinctiveness would be contrary to
the ultimate inquiry under this factor, namely, "the
degree to which the designation is associated by
prospective purchasers with a particular source."
Petro Stopping, 130 F.3d at 93 (quoting Estee
Lauder, Inc. v. The Gap, Inc., 108 F.3d 1503, 1510
(2d Cir. 1997)).
14 See McCarthy on Trademarks § 11:83; see
also A.C. Legg Packing Co., Inc. v. Olde
Plantation Spice Co., Inc., 61 F.Supp.2d
426, 430 (D.Md. 1999); World Gym
Licensing, Ltd. v. Fitness World, Inc., 47
F.Supp.2d 614, 621-22 (D.Md. 1999); Sun
Banks of Florida, Inc. v. Sun Federal Sav.
Loan, Assoc., 651 F.2d 311, 315 (5th Cir.
1981) (strength is a factor of both the
inherent quality of the mark and its
"standing in the marketplace."); GoTo.com,
Inc. v. Walt Disney Co., 202 F.3d 1199,
405 F. Supp. 2d 680 (E.D. Va. 2005)
1207 (9th Cir. 2000) ("This `strength' of the
trademark is evaluated in terms of its
conceptual strength and commercial
strength."). Though the Fourth Circuit has
not expressly adopted this framework, it
has done so in effect. See Petro Stopping,
130 F.3d at 93 ("Thus, courts must
examine, in addition to the mark's
characterization as suggestive or
descriptive, the extent of secondary
meaning a mark has acquired in the eyes of
consumers.").
Normally, the fact that the PTO has registered the
trademark is persuasive evidence of a mark's
conceptual strength because the PTO registers
only fanciful, arbitrary or suggestive marks, or
descriptive marks shown to have acquired
secondary meaning. Lone Star, 43 F.3d at 934.
Indeed, as described above, the word
RENAISSANCE is "suggestive" as that term has
been defined. However, the categories of
distinctiveness are only a rough measure of the
mark's *16 conceptual distinctiveness. See
Washington Speakers, 33 F.Supp.2d at 494.
The categorization of marks as either generic,
descriptive, suggestive, or arbitrary or fanciful is
premised on the common sense notion that the less
descriptive a mark is of the product, the more
likely it is that the mark is distinctive with respect
to the product. Yet, this may not always be true, as
some words that do not describe any particular
product, but have some attractive connotation,
become so commonly-used as to diminish their
ability to distinguish one product from another.
This phenomenon was recognized by the Fourth
Circuit as long ago as 1941, in a dispute between a
whiskey distiller and a beer brewer, both users of
the trademark ARROW for their products. Arrow
Distilleries, Inc. v. Globe Brewing Co., 117 F.2d
347, 349 (4th Cir. 1941). There, the Fourth Circuit
described the relevance of this phenomenon to the
trademark infringement analysis in the following
terms:
8
 Renaissance Greeting Cards v. Dollar Tree Stores
The crucial issue in this case is whether the
word `Arrow' is a word of such distinctive
character, when adopted as a trade-mark
for one kind of intoxicating liquors, that it
cannot be used on any other kind without
creating the belief that both spring from a
common source; or, on the other hand, is a
word like `Standard,' or `Gold Medal,' or
`Blue Ribbon,' which has been adopted by
so many persons as a trade-mark for
articles of divers kind that it does not
signify the goods of any one user. The
question is important because, in
determining the extent of the field of
exclusive occupation, a name in the first
class is accorded liberal treatment in the
laws of trade-marks, while a name in the
second class is narrowly restricted to the
particular kind of goods for which it is
used by its owner.
Id. Given this and because ARROW was
commonly used as a trademark, the court found
that ARROW belonged to the second category,
and that the trademark protection should not be
extended even to products as similar as beer and
cordials. Id. at 351. Twenty years earlier the
Seventh Circuit reached essentially the same result
for the same reason. See Pabst Brewing Co. v.
Decatur Brewing Co., 284 F. 110, 113 (7th Cir.
17 1922) ("In view of the very wide and general *17 18
employment of `Blue Ribbon' as a trade-name, we
believe the District Court properly concluded that
appellant's right to use it was limited to [beer], and
whatever other first use it made of it, and that in
692 appellee's use of it *692 [for malted liquor] there
was no likelihood of any confusion of its product
with that of appellant."). The Second Circuit
adopted this reasoning in a similar dispute soon
thereafter. France Milling Co. v. Washburn-Crosby
Co., 7 F.2d 304, 306 (2d Cir. 1925) ("[O]ne who
takes a phrase which is the commonplace of self-
praise like `Blue Ribbon' or `Gold Medal' must be
content with that special field which he labels with
so undistinctive a name.").
405 F. Supp. 2d 680 (E.D. Va. 2005)
The common use of a given trademark is still
considered an important factor in considering the
strength of a mark. Thus, in Petro Stopping, the
Fourth Circuit declined to extend the plaintiff's
trademarks, PETRO STOPPING CENTER and
PETRO TRAVEL PLAZA, which it used at its
truck stops, to defendant's use of a PETRO CARD
at its unmanned, self-service filling stations, in
part because of the common usage of the term
PETRO. Petro Stopping, 130 F.3d at 94.
Furthermore, the strength of a commonly-used
mark decreases as the number of third-party
registrations increases. See Pizzeria Uno, 747 F.2d
at 1531 ("The greater the number of identical or
more or less similar trade-marks already in use on
different kinds of goods, the less is the likelihood
of confusion.") (quoting Amstar Corp. v. Domino's
Pizza, Inc., 615 F.2d 252, 259-60 (5th Cir. 1980)
(Seventy-two third party registrations of the
appellant's DOMINO mark in the PTO makes the
mark weak).
Dollar Tree has presented uncontroverted evidence
that the RENAISSANCE mark is the subject of
465 federal and 203 state trademark registrations
or pending applications, that there are 245
identifiable "common law trademarks" using the
word "Renaissance," and that at least 2,925
businesses using the word RENAISSANCE in
their business names. Furthermore, including
those *18 of RGC, there are 23 registrations for
the mark RENAISSANCE in its class of paper
products, including registrations for similar
products such as wedding albums and labels.
Whatever inherent distinctiveness the
RENAISSANCE mark may have for
distinguishing RGC's greeting cards is thus greatly
diminished by the widespread use of the word in
selling other products.15
15 RGC correctly points out that it has
addressed this problem by attempting to
police the use of the RENAISSANCE
mark in adjacent markets. Just as the
widespread prevalence of the mark
diminishes its distinctiveness, so "the
9
 Renaissance Greeting Cards v. Dollar Tree Stores
successful policing of a mark adds to its
strength to the extent that it prevents
weakening of the mark's distinctiveness in
the relevant market." McCarthy on
Trademarks § 11:91 (quoting Morningside
Group, Ltd. v. Morningside Capital Group,
LLC, 182 F.3d 133, 139 (2d Cir. 1999)).
Yet, RGC's efforts in this respect have
yielded mixed results. Its settlement
agreement with Renaissance Mark, Inc.
merely restricted the type of label that
could be marketed under the name
Renaissance. Similarly, its settlement
agreement with Album X Corporation was
merely an agreement that Album X would
continue not to sell its albums bearing the
RENAISSANCE mark in department
stores. Finally, neither the voluntary
abandonment, nor the cancellation of a
registration under 15 U.S.C. § 1058,
provide persuasive evidence of the strength
of RGC's mark outside of the greeting card
industry.
20
While the conceptual strength of RGC's mark is
greatly diminished by the common usage of the
mark across a variety of markets, this does not end
the strength of the mark analysis; it is also
necessary to consider the commercial strength of
the mark. See, e.g., Petro Stopping, 130 F.3d at 93
("the placement of a mark in either the suggestive
or descriptive category is merely the first step in
assessing the strength of a mark for purposes of
the likelihood of confusion test."). The
commercial strength of a mark for purposes of the
likelihood of confusion inquiry is related to, and
693 therefore sometimes confused with, a mark's *693
"secondary meaning" for purposes of the
distinctiveness inquiry. See, e.g., Petro Stopping,
130 F.3d at 93. While the "secondary meaning"
inquiry is relevant to a mark's validity, and the
commercial strength of a mark inquiry is relevant
to the likelihood of confusion, both inquiries
19 involve similar analysis with both *19 requiring
evidence that the mark is generally associated with
the product or products at issue.16 Thus, the
inquiry into a mark's commercial strength will
405 F. Supp. 2d 680 (E.D. Va. 2005)
mirror the inquiry that would be undertaken to
determine whether the mark has secondary
meaning. Normally, the "secondary meaning"
inquiry involves consideration of several factors,
including, but not limited to: (1) advertising
expenditures; (2) consumer studies linking the
mark to a source; (3) sales success; (4) unsolicited
media coverage of the product; (5) attempts to
plagiarize the mark; and (6) the length and
exclusivity of the mark's use. Perini Corp. 915
F.2d at 125 (citing Thompson Medical Co. v.
Pfizer, Inc., 753 F.2d 208, 217 (2d Cir. 1985)). Not
surprisingly, many of the same factors have been
considered as relevant to a determination of a
mark's strength for purposes of the likelihood of
confusion inquiry. Thus, it is appropriate to
consider the sales and advertising expenditures of
the product or products bearing the trademark at
issue relative to those of other trademarks in the
market.17 Likewise, courts examining the strength
of a plaintiff's mark consider the exposure of *20
the mark through independent media coverage,18
survey evidence of customer perceptions of the
mark,19 and the frequency of attempts to plagiarize
or imitate the mark.20
16 See McCarthy on Trademarks § 11:82
("When determining the commercial or
marketplace strength of a mark, the courts
look to the same kind of evidence of real
world recognition of the mark as is used to
decide the presence or absence of
secondary meaning to determine whether
or not a non-inherently distinctive
designation is or is not a valid mark.");
Levi Strauss Co. v. Blue Bell, Inc., 632 F.2d
817, 821 (9th Cir. 1980) ("Secondary
meaning and likelihood of buyer confusion
are separate but related determinations, the
relationship rising from the same
evidentiary findings. The stronger the
evidence of secondary meaning, the
stronger the mark, and the more likely is
confusion.").
10
 Renaissance Greeting Cards v. Dollar Tree Stores
17 See McCarthy on Trademarks § 11:83
("While evidence of advertising and sales
is relevant to prove the strength of a mark,
standing alone without a context, such
evidence may not be sufficient to prove
that a mark is very strong. That is, the
trademark owner should put its sales and
advertising figures in perspective by
comparing them to the sales and
advertising figures for similar products to
show that this mark is used on a leading
product in its category.") (citing Fossil Inc.
v. Fossil Group, 49 U.S.P.Q.2d 1451, 1457
(T.T.A.B. 1998)).
21
18 Lone Star, 43 F.3d at 935 ("As a result of
Plaintiff's efforts, its mark has been the
subject of national and local media
attention and has achieved a high level of
recognition in the restaurant field, entitling
the marks to broad legal protection.")
(citing Communications Satellite Corp. v.
Comcet, Inc., 429 F.2d 1245, 1248 (4th Cir.
1970)).
19 See Commerce Nat'l Ins. Serv., Inc. v.
Commerce Ins. Agency, Inc., 214 F.3d 432,
442 (3d Cir. 2000) (customer surveys
relevant because probative of strength of
the mark).
20 See Polo Fashions, Inc. v. Craftex, Inc.,
816 F.2d 145, 148 (4th Cir. 1987) ("The
plaintiff's symbol, standing alone, is a
strong mark of the identity of the source. It
has been widely used by the plaintiff and,
as indicated above, has not infrequently
been imitated.") (internal citations
omitted).
Consideration of these factors leads to the
conclusion that while the RENAISSANCE mark
may have some potential power to identify a
source in the greeting card market, it is not a
strong mark. RGC's sales average of roughly $12
million per year is minuscule in relation to the size
694 of the overall greeting card industry of $7 *694
billion per year.21 Likewise, RGC's attempts to
promote its mark through advertising have
405 F. Supp. 2d 680 (E.D. Va. 2005)
averaged less than $360,000 per year, and have
been targeted primarily to the narrow set of
wholesale customers that constitute its direct
customer base. Further, RGC has provided no
evidence that its mark has been the subject of
independent media coverage, nor has RGC
provided any survey evidence indicating that there
is a strong association between its
RENAISSANCE mark and the greeting cards it
sells within the minds of the consuming public.
Consideration of the mark's commercial weakness,
in combination with the wide use of the term
RENAISSANCE in other products, compels the
conclusion that the *21 RENAISSANCE mark is a
weak mark, such that its ability to identify the
source of products does not extend beyond the
greeting card market.
21 This is true even considering the fact that
RGC's sales are made at the wholesale
level and the $7 billion figure is for the
retail market. It is undisputed that RGC's
share of the retail market does not exceed
1%.
(ii) The Similarity of the Two Marks
The second factor's relevance to the likelihood of
confusion is obvious: the closer the resemblance
between the protected mark and the infringing
mark, the more likely the prospect for confusion.
See Cable News Network, L.P. v. CNNews.com,
177 F.Supp.2d 506, 519 (E.D.Va. 2001). In
evaluating the similarity or dissimilarity of the
parties' marks, the "marks need only be
sufficiently similar in appearance, with greater
weight given to the dominant or salient portions of
the marks." Lone Star, 43 F.3d at 936. A
comparison of the marks in Exhibit A reveals a
greater or lesser degree of similarity depending on
which marks are compared. For example, Dollar
Tree #2 is in cursive script, is surrounded by a
very ornate border set in an oval, and has a capital
letter R which is especially large and ornate
followed by lower case letters. In contrast, RGC
#3 has no border, and its lettering is printed in
outlined block letters of equivalent size. These
11
 Renaissance Greeting Cards v. Dollar Tree Stores 405 F. Supp. 2d 680 (E.D. Va. 2005)

marks are further distinguishable by the fact that communications services derive from the same
one is accompanied by the words gift bags and the source); see also, Aunt Jemima Mills Co. v. Rigney
other is accompanied by the words greeting cards. Co., 247 F. 407, 410 (2d Cir. 1917) (pancake syrup
These marks do appear quite different. A and pancake mix); Valmor Products Co. v.
comparison of Dollar Tree #4 and RGC #2, Standard Products Corp., 464 F.2d 200, 203 (1st
however, reveals marks that, except for slight Cir. 1972) (haircare products and hair dryers and
differences in the capital R and the capitalization curling sets).
of the remaining words, are nearly identical. It is
RGC also points to a recent decision of the
clear that RGC has used RGC #2 and RGC #4
Trademark Trial and Appeal Board holding that
since 1996. It is also clear that the four Dollar Tree
greeting cards and gift products are related.
gift bags that form the basis for RGC's claims of
National Football League v. Jasper Alliance
actual confusion used either Dollar Tree #1 or #2.
Corp., 16 USPQ 2d 1212, 1216 (TTAB 1990).
Since the use of these different Dollar Tree marks
There the Board held that the applicant's attempt
is not known for certain, it is assumed for
to register the SUPER BOWL trademark on
summary judgment purposes that the marks of
greeting cards was likely to confuse consumers to
Dollar Tree most similar to RGC #2 and #4 are
conclude that the greeting cards came from the
used in all other instances, and that, therefore, the
National Football League, who used its SUPER
22 marks are similar in appearance. *22 (iii) The
23 *23 BOWL trademark on posters, post cards,
Similarity of the Goods/Services the Marks
napkins, paper plates, paper party goods, and
Identify
streamers. Id. In reaching this result, the Board
When the infringing goods are not identical to the stated that:
goods sold under the trademark, they may still be
It is our view in this case, that the sale of
entitled to protection if they are sufficiently
greeting cards would naturally flow from
related to cause consumers to believe they derive
previous sales of paper goods such as
from the same source. See Communications
posters, post cards, wrapping and paper
Satellite Corp. v. Comcet, Inc., 429 F.2d 1245,
party goods and that potential purchasers
1252 (4th Cir. 1970) ("When, as here, the parties
would be quite likely to believe that
are not competitors, the issue of infringement
greeting cards and paper goods such as
hinges on the likelihood of confusion about the
those marketed by opposer's licensees
source or sponsorship of the defendant's goods and
would emanate from the same source. We
services."). This record reflects that greeting cards
therefore conclude that the sale of these
are sometimes sold under the same mark as gift
goods under the same or a similar mark
695 bags and gift wrap. For example, *695 the market
would be likely to lead to confusion,
leader in gift cards, Hallmark, markets both
mistake or deception.
greeting cards and gift bags under its well-known
trademark. Indeed, RGC briefly marketed gift Id. Thus, when a mark is sufficiently strong, it will
bags and gift wrap under the RENAISSANCE preclude its use in not only directly competitive
mark in the 1980s. RGC also contends that the products, but closely related ones as well.
goods are not merely similar, but also related, and
The fact that a junior user's good is related to that
that "complementary products, or services, are
of the senior user, is not, however, sufficient by
particularly vulnerable to confusion."
itself to overcome an otherwise weak mark. Thus,
Communications Satellite, 429 F.2d at 1253
in Arrow Distilleries, the Fourth Circuit concluded
(remarking that a reasonable consumer would
that the use of the mark ARROW, "even in the
believe that communications computers and
related fields of beers and cordials, [would not

12
 Renaissance Greeting Cards v. Dollar Tree Stores 405 F. Supp. 2d 680 (E.D. Va. 2005)

suffice to] indicate a common origin or endanger on luxury boats because plaintiff's mark is
the reputation of the plaintiff's goods." Arrow weak); Knaack Mfg. Co. v. Rally

Distilleries, 117 F.2d at 351. Similarly, in Petro Accessories, Inc., 955 F.Supp. 991, 1004
(plaintiff's WEATHERGUARD mark used
Stopping, the Fourth Circuit found that the
in line of tool boxes and truck and van
plaintiff's PETRO mark was not infringed despite
equipment not infringed by defendant's use
the fact that the defendant sold fuel under the
of WEATHERGUARD mark for semi-
mark, one of the services provided by plaintiff.
fitted car covers)).
Petro Stopping, 130 F.3d at 95. Indeed,
McCarthy's on Trademarks is replete with (iv) The Similarity of the Facilities the Two Parties
examples of similar or identical trademarks for Use in their Business
related goods found to be non-infringing.22 Thus,
The likelihood of confusion may also be increased
24
696 though the *696 products *24 are related, and
if both goods are sold in the same channels of
therefore this factor weighs in favor of a finding of
trade. See McCarthy on Trademarks § 24.51; see
infringement, this factor alone is not dispositive.
also Paco Sport, Ltd. v. Paco Rabanne Parfums,
22 See McCarthy on Trademarks § 24:62 86 F. Supp. 2d 305, 316-17 (S.D.N.Y. 2000) (no
(citing Allstate Ins. Co. v. Allstate Inv. likelihood of confusion between high-fashion
Corp., 210 F.Supp. 25, 28 (W.D.La. 1962) conscious, high income consumers in upscale
(No infringement between plaintiff's use of specialty stores and casual clothing marketed to
ALLSTATE mark in insurance industry
young, urban males in inexpensive retail outlets in
and defendant's use in mortgage
urban neighborhoods). The relevant inquiry under
brokerage); American Optical Corp. v.
this factor is whether the goods are sold to the
American Olean Tile Co., 185 U.S.P.Q.
same class of consumers in the same context. See
405, 409-10 (S.D.N.Y. 1974) (no
McCarthy on Trademarks § 24.51.
infringement of plaintiff's mark of AO for
anti-skid floor coating by defendant's use RGC markets its greeting cards to its wholesale
of AO for ceramic tile products); IDV
customers who ultimately sell them in various
North America, Inc. v. S M Brands, Inc., 26
types of retail establishments, including: florists,
F. Supp. 2d 815, 824 (E.D.Va. 1998)
pharmacies, hospital gift shops, grocery stores,
(BAILEY's low priced cigarettes are not an
card and gift shops, and other retail outlets. Dollar
infringement of BAILEY's liqueurs such as
Tree markets its gift bags and wrapping paper
BAILEY's IRISH CREAM); Vitarroz
Corp. v. Borden, Inc., 644 F.2d 960, 966
exclusively in its discount retail stores. Thus,
(2d Cir. 1981) (No infringement of while both parties market generally to the retail
plaintiff's mark for BRAVOS used on market, Dollar Tree's products are likely to be
crackers by defendant's use of BRAVOS on concentrated among value-conscious consumers.
tortilla chips despite virtually identical
The context in which RGC's greeting cards and
marks and close relation of products);
25 Dollar Tree's gift bags and other *25 products are
Edison Bros. Stores, Inc. v. Cosmair, Inc.,
651 F.Supp. 1547, 1562-63 (S.D.N.Y.
purchased is similar, as evidenced by the fact that
1987) (defendant's use of NOTORIOUS Dollar Tree does sell greeting cards in its stores.
mark for its perfume does not infringe And, while Dollar Tree does not sell RGC's
plaintiff's mark of NOTORIOUS used for greeting cards, it is not required that the goods be
women's clothing and shoes); Riva Boats sold side by side to find a likelihood of confusion
Int'l S.p.a. v. Yamaha Motor Corp., 223 under this factor. See Century 21 Real Estate
U.S.P.Q. 183 (C.D.Cal. 1983) (defendant's Corp. v. Century Life of America, 970 F.2d 874,
use of RIVA on motor scooters does not 877 (Fed. Cir. 1992) ("An opposer does not have
infringe plaintiff's right to use RIVA mark

13
 Renaissance Greeting Cards v. Dollar Tree Stores
the burden to show sales of an infringing product
by a specific chain of supermarkets or agents.").
Greeting cards, gift bags, gift wrap and related
items are all purchased in a similar retail context
that is characterized by relatively quick purchasing
decisions based on a comparison of the available
items. Thus, the channels of trade, while not
identical, are similar enough to weigh here very
modestly in favor of infringement.
(v) The Similarity of the Advertising Used by the
Two Parties
Similarities in the manner of advertising the
products may also increase the likelihood of
confusion. See Sara Lee, 81 F.3d at 466. On the
other hand, evidence of dissimilarity between the
methods of advertising diminishes the likelihood
of confusion. See IDV North America, Inc. v. SM
Brands, Inc., 26 F.Supp.2d 815, 828 (1998). In
this case, there is absolutely no overlap in the
advertising of the two brands. Dollar Tree does not
advertise its gift bags and wrapping paper and
RGC advertisements are directed almost
exclusively towards its wholesale customer base,
697 and not to the ultimate consumers of the *697
products. Accordingly, because of the minimal
advertising of both parties, this factor militates
against a likelihood of confusion.
(vi) The Defendant's Intent
Also, probative of the likelihood of confusion is
the putative infringer's intent in adopting the
allegedly infringing mark. The Fourth Circuit put
this point as follows: "If there is intent to confuse
the buying public, this is strong evidence
26 establishing likelihood of confusion, since one *26
intending to profit from another's reputation 27
generally attempts to make his signs,
advertisements, etc., to resemble the other's so as
to deliberately induce confusion." Pizzeria Uno,
747 F.2d at 1535. In other words, a junior user's
intent to confuse consumers is probative of the
likelihood that it has succeeded in confusing
consumers. As the Ninth Circuit has explained:
405 F. Supp. 2d 680 (E.D. Va. 2005)
[W]hen the evidence does show or require
the inference that another's name was
adopted deliberately with a view to obtain
some advantage from the good will, good
name, and good trade which another has
built up, then the inference of likelihood of
confusion is readily drawn, for the very act
of the adopter has indicated that he expects
confusion and resultant profit. . . . If such
an intent is shown, it raises a presumption
that deception and confusion resulted.
Fleischman Distilling Corp. v. Maier Brewing Co.,
314 F.2d 149, 158 (9th Cir. 1963) (internal
citations and quotation marks omitted).
The record here reflects that Dollar Tree had no
knowledge of RGC's RENAISSANCE marks
when it began using a similar mark on its gift bags
in the early 1990s, and did not learn of RGC's
trademark until just prior to the commencement of
this lawsuit. Even so, RGC contends that Dollar
Tree's failure to conduct a trademark search prior
to marketing its gift bags under the
RENAISSANCE mark in 1993 should weigh
against it. See, e.g., One World Botanicals Ltd. v.
Gulf Coast Nutrionals, Inc., 987 F.Supp. 317, 335
(D.N.J. 1997). This argument misunderstands the
value of this factor as probative of likelihood of
confusion. If Dollar Tree had no knowledge of
RGC's mark, it could not have intended to confuse
the public. At most, the failure to conduct a search
is probative of Dollar Tree's carelessness, which
even if true, has little bearing on the likelihood
that its allegedly infringing mark will confuse the
public. See McCarthy on Trademarks § 23:109 ("
[T]he existence of constructive notice is not
evidence that a later user *27 necessarily intended
to confuse.").
Furthermore, the fact that Dollar Tree did not
cease marketing its gift bags with the
RENAISSANCE mark immediately upon receipt
of RGC's letter is not probative of bad faith. See
McCarthy § 23:120 ("[A]fter a warning from
plaintiff, defendant's attempt in good faith to
14
 Renaissance Greeting Cards v. Dollar Tree Stores
obtain a judicial determination of trademark rights
should be no indication of evil intent or bad
faith."). Dollar Tree correctly contends that it had
a reasonable basis to continue to market its gift
bags under the RENAISSANCE mark because it
had a good faith belief that RGC's mark is not
strong enough to preclude others from using the
RENAISSANCE mark for related goods. Given
this, Dollar Tree's continued use of the mark on its
paper products, and its pursuit of a judicial
determination of this dispute is not evidence of
bad faith, nor is it probative of the likelihood of
confusion. Therefore, because Dollar Tree did not
intend to confuse consumers, this factor weighs in
favor of a finding of no infringement.
(vii) Actual Confusion
Evidence of actual confusion may in certain
698 circumstances be compelling evidence *698 of the
likelihood of confusion. See Lone Star, 43 F.3d at
937. The record reflects four separate instances of
actual confusion as to the source of a Dollar Tree
gift bag that possessed the RENAISSANCE mark.
Significantly, every instance of confusion was
reported either by a wholesale customer of RGC,
or, in one instance, a sales representative of RGC.
It stands to reason that actual confusion among
wholesale purchasers of RGC's greeting cards is
more likely, given their greater familiarity with the
mark due to personal interaction with RGC's sales
force and the more significant wholesale
purchasing decisions they have made. Likewise,
29
the sales representative is more likely to associate
the RENAISSANCE mark with RGC because part
28 of *28 her income is derived from selling the
product. RGC presents no instances of confusion
among the ultimate consumers of the greeting
cards, the relevant market for the likelihood of
confusion inquiry, and therefore RGC's examples
of actual confusion are not very compelling.
Indeed, the fact that only four instances of actual
confusion have been discovered during the more
than ten years that the products were marketed
simultaneously actually supports a finding of no
405 F. Supp. 2d 680 (E.D. Va. 2005)
likelihood of confusion. See Petro Stopping, 130
F.3d at 88 ("[T]he company's failure to uncover
more than a few instances of actual confusion
creates a `presumption against likelihood of
confusion in the future.'") (quoting Amstar Corp.
v. Dominos Pizza, Inc., 615 F.2d 252, 263 (5th Cir.
1980)); Century 21 Real Estate Corp. v.
Lendingtree, Inc., 425 F.3d 211, 224 (3rd Cir.
2005) (listing as one of the factors for determining
likelihood of confusion "the length of time the
defendant has used the mark without evidence of
actual confusion."). The de minimis nature of
RGC's evidence of actual confusion is only
highlighted by the fact that it made significant
efforts to uncover instances of actual confusion.
Since the commencement of this litigation RGC
has twice asked its sales force to solicit instances
of actual confusion from its wholesale customers.
Despite this effort, RGC has only been able to
come up with these isolated instances of confusion
by people more familiar with its brand than the
ultimate consumer. This stands in stark contrast to
situations in which the Fourth Circuit has found
actual confusion as an important factor. See
Resorts of Pinehurst, 148 F.3d at 422-23
(reporting 15 misplaced calls each week, and other
evidence of actual confusion); Lone Star, 43 F.3d
at 927 (relating numerous unsolicited instances of
customers being confused about the existence of
any relation between the two restaurants).
In sum, given the length of time over which the
parties' products were simultaneously *29 sold, the
lack of any evidence of actual confusion among
the retail market, and the efforts made by RGC to
uncover evidence of actual confusion, this factor
does not weigh in favor of a finding of a
likelihood confusion. As the Third Circuit has
explained: "Ownership of a trademark does not
guarantee total absence of confusion in the
marketplace. Selection of a [common mark]
naturally entails a risk of some uncertainty and the
law will not assure absolute protection." Scott
Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d
1225, 1231 (3d Cir. 1978). See also, McCarthy on
15
 Renaissance Greeting Cards v. Dollar Tree Stores
Trademarks § 23:13 ("The existence of some
evidence of instances of actual confusion does not
necessarily prevent the grant of a summary
judgment of dismissal for lack of a triable issue of
likelihood of confusion. A court may find
evidence of actual confusion insufficient to
present a triable issue of fact where evidence in
rebuttal provides a reasonable explanation
discounting isolated instances of confusion.")
699 (citing Woodsmith Publishing *699 Co. v. Meredith
Corp., 904 F.2d 1244 (8th Cir. 1990); Lang v.
Retirement Living Publishing Co., 949 F.2d 576
(2d Cir. 1991)).
IV.
In the end, the question to be decided in this
dispute is whether the strength of RGC's
RENAISSANCE mark to identify a source for
greeting cards is sufficient to spill over beyond the
scope of greeting cards to related product markets.
When making this determination, the issue is
whether the RENAISSANCE mark can be used on
related but distinct products "without creating the
belief that both spring from a common source."
Arrow Distilleries, 117 F.2d at 349. Some marks
are so well-known and so closely associated with a
single source or producer that they are entitled to
protection not only in those markets in which they
are used, but also in those markets in which
consumers might likely expect them to be used.
On the other hand, those marks which are neither
well-known in the marketplace, nor evocative of a
30 single producer, warrant narrower *30 protection
restricted to the products for which the mark is
registered.
While the record indicates that greeting cards are
31
related to gift bags, gift wrap and the other paper
1700 *32 *1 *700
32
products sold by Dollar Tree under the
Renaissance name, RGC has not provided any
evidence that its mark is strong enough to warrant
the conclusion by the preponderance of the
405 F. Supp. 2d 680 (E.D. Va. 2005)
evidence that consumers of these related products
are likely to be confused as to source. The
common and frequent use of the RENAISSANCE
mark in many industries and businesses, coupled
with RGC's de minimis share of the retail market
and paltry advertising efforts, compels the
conclusion that RGC's mark is too weak to have
created any likelihood of confusion among
consumers of Dollar Tree's paper products bearing
a similar mark. Indeed, the record reflects no
evidence retail consumers' recognition of RGC's
mark, a prerequisite to any confusion with the
RENAISSANCE marks used by Dollar Tree.
RGC's only evidence of actual confusion, despite
the more than ten years over which the products
were marketed under similar marks, were four
instances of confusion by wholesale customers
and a sales representative. These few incidents do
not warrant a conclusion that there was a
likelihood of confusion created by Dollar Tree's
use of the RENAISSANCE mark on its paper
products. Nor does the other evidence presented
by the record make it more likely that consumers
will confuse the source of the product. The rough
similarity of the marks and the retail distribution
of both products weighs in favor of a finding of
likelihood of confusion, but the lack of any
overlap in advertising, and the absence of any
evidence of Dollar Tree's intent to confuse weighs
in favor of a finding of no likelihood of confusion.
In the end, consideration of the weakness of
RGC's mark leaves no doubt that RGC's
RENAISSANCE mark belongs to the class of
trademarks entitled to protection only in the
product market for which the registration issued.
Summary judgment for Dollar Tree is therefore
*31 appropriate. An appropriate order will issue.
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Renaissance Greeting Cards v. Dollar Tree Stores 405 F. Supp. 2d 680 (E.D. Va. 2005)

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